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In the topsy-turvy world of Standard Essential Patent (SEP) litigation, a court acknowledging the obvious often counts as news. Thus, when Judge Gilstrap in EDTX noted the other day in an order before trial (Doc376) that the ETSI IPR policy does not require royalties being calculated on use by the smallest saleable patent practicing unit (SSPPU) as the base, it generated breathless headlines (Bloomberg).

Over the course of my 20+ years practicing law, I have had the honor of working with many individuals who are involved at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews.

My next interviewee, Robert Colao, is the founder and President of radiusIP®, Inc. He is currently also the Chief Licensing Executive for SIPCO, LLC and IP Co, LLC, and is responsible for the overall licensing efforts and business aspects of the ESSENTIAL WIRELESS MESH™ portfolio/licensing program. Read more

If the patent demand letter situation escalates and you may be sued for infringement, you have options to consider.

Consider filing a lawsuit for declaratory judgment (DJ).

In certain cases you may file a lawsuit against a patent owner for declaration that you are not infringing on any valid patents. Knowing the patent owner’s litigation history is crucial when considering this option.Read more

If you receive a patent demand letter, you can choose from many courses of action, but each has pros and cons. Today we will discuss some immediate considerations to consider.

Doing nothing is an option, but a risky one.

Pro: Some patent owners are not committed to actually filing lawsuits. They cast a wide net with lots of demand letters, knowing some recipients will pay nominal amounts to make it go away. If you ignore it, there’s a chance there will be no serious follow-up.

Con: Ignoring a patent demand letter may lead the patent owner to file a lawsuit to get your attention. Read more

I first met Eric Stasik some 5 years ago when I was at Vringo. When we first met, it took no more than 10 minutes to appreciate how lucky I was to have him on my team. Eric has an uncanny ability to, very quickly, see through can’t and cut to the core issues at hand. More importantly, he finds solutions. Eric gets stuff done quickly, effectively, and cost efficiently. Having seen him at work in the years since, my appreciation of Eric and what he brings to the table has only deepened.Eric currently provides assistance and guidance to firms engaged in commercial patent license negotiations through his consultancy, Avvika AB. I am honored he agreed to this interview. Read more

Intellectual Asset Management Magazine (IAM) today published a short excerpt of my and Doug Clark’s forthcoming, longer piece on China’s anti-monopoly law (AML) and how it has been applied to standard essential patents (SEPs). The published excerpt concerns China’s National Development and Reform Commission’s (NDRC) investigation of Vringo undertaken at the behest of ZTE. The piece focuses on two hair-raising meetings I had with NDRC officials in Beijing where all manner of explicit and implicit threats to my life, liberty, and property were made. Read more

Over the course of my 20+ years practicing law, I have had the honor of working with many individuals at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews.Read more

This article is the next piece of my series discussing patent demand letters. Part one, reviewed the initial considerations and steps one should make upon receiving a patent demand letter. Part two explored the subject or content of the letter — i.e., what is the sender asking for?Part three addresses evaluating the merits.

At this stage it might not be worthwhile to perform a full analysis of the letter’s claims, but it is definitely worth performing at least a high-level review. Read more

This paper was originally written as a source material for my presentation at the ABA’s 2017 IP West as part of the The China Paradox – October 11-12, 2017, Long Beach, CA, and subsequently edited and supplemented.

I. The Vringo Background

The following paper is a short history of the thirty-nine-month battle between Vringo, Inc. and ZTE Corporation. Vringo (now called FORM Holdings) was a technology company that became involved in the worldwide patent wars.[1] The company won a 2012 intellectual property lawsuit against Google, in which a U.S. District Court ordered Google to pay 1.36 percent of U.S. AdWords sales. Analysts estimated Vingo’s judgment against Google to be worth over $1 billion.[2] The Court of Appeals for the Federal Circuit overturned the District Court’s ruling on appeal in August 2014 in a split 2-1 decision,[3] which Intellectual Asset Magazine called “the most troubling case of 2014.”[4] Vingo also pursued worldwide litigation against ZTE Corporation in twelve countries, including the United Kingdom, Germany, Australia, Malaysia, India, Spain, Netherlands, Romania, China, Malaysia, Brazil and the United States.[5] The high profile nature of the intellectual property suits filed by the firm against large corporations known for anti-patent tendencies has led some commentators to refer to the firm as a patent vulture or patent troll.[6] Read more